national arbitration forum

 

DECISION

 

New Strater Corporation, Inc. v. St Kitts Registry

Claim Number: FA0706001009019

 

PARTIES

Complainant is New Strater Corporation, Inc. (“Complainant”), represented by Eric J. Moutz, of Hogan & Hartson LLP, 1470 Walnut Street, Suite 200, Boulder, CO 80302.  Respondent is St Kitts Registry (“Respondent”), 45-70 Meridian Parkway, St Kitts., II Olam KN.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <straterhotel.com>, registered with Moniker Online Services, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Louis E. Condon as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 15, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 18, 2007.

 

On June 21, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <straterhotel.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name.  Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On June 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 17, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@straterhotel.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On July 24, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <straterhotel.com> domain name is identical to Complainant’s STRATER HOTEL mark.

 

2.      Respondent does not have any rights or legitimate interests in the <straterhotel.com> domain name.

 

3.      Respondent registered and used the <straterhotel.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, New Strater Corporation, Inc., owns and operates an internationally acclaimed independent historic luxury hotel under the STRATER HOTEL mark in Durango, Colorado.  The hotel has been a Durango landmark since 1888 and even served as the location where Louis Lamour wrote some of his famous novels, including How the West Was Won.  The hotel has been featured in numerous newspaper and magazine articles over the years.  Complainant has marketed the hotel and its services, including dining, Victorian plays, music, and costumed bartenders and saloon girls, worldwide under the STRATER HOTEL mark for more than 81 years.  On April 2, 2007, Complainant registered the STRATER MARK with the Secretary of State in Colorado.

 

Respondent, St Kitts Registry, registered the <straterhotel.com> domain name on March 6, 2003.  The disputed domain name resolves to a website containing hyperlinks to various third-party hotel and travel websites unrelated to Complainant, as well as photos of “scantily clad women.”

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)   the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)   Respondent has no rights or legitimate interests in respect of the domain name; and

(3)   the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant is not required to hold a trademark registration to establish rights in the STRATER HOTEL mark under Policy ¶ 4(a)(i).  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).

 

Complainant established with outside evidence that it has common law rights in the STRATER HOTEL mark through continuous and extensive use of the mark in connection with marketing its hotel and entertainment services for more than 80 years.  Complainant’s Strater Hotel has been a landmark in Durango for over a century and has gained fame as a Victorian and Old West-inspired tourist destination.  Moreover, Complainant holds a trademark registration with the Colorado Secretary of State for the STRATER HOTEL mark, which reflects that the mark was first used by Complainant in 1888.  Therefore, the Panel finds that the mark acquired secondary meaning sufficient to establish Complainant’s rights in the mark under Policy ¶ 4(a)(i).  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”).

 

Respondent’s <straterhotel.com> domain name is identical to Complainant’s STRATER HOTEL mark, as it uses the mark in its entirety, merely omitting the space between the two words.  The disputed domain name also adds the generic top-level domain “.com” to the mark, an alteration which is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is a required element of all domain names.  Thus, the Panel finds that the <straterhotel.com> mark is identical to Complainant’s STRATER HOTEL mark pursuant to Policy ¶ 4(a)(i).  See Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights or legitimate interests in the <straterhotel.com> domain name.  Under Policy ¶ 4(a)(ii), Complainant has the initial burden of proving that Respondent lacks rights or legitimate interests in the disputed domain name.  Once Complainant makes a prima facie case, however, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name.  In the instant case, the Panel finds that Complainant has established a prima facie case under the Policy.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).

 

Based on Respondent’s failure to answer the Complaint, the Panel infers that Respondent lacks rights or legitimate interests in the <straterhotel.com> domain name.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).  However, the Panel will still examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).

 

Complainant alleges that Respondent is not commonly known by the <straterhotel.com> domain name, which indicates that Respondent lacks rights or legitimate interests in the disputed domain name.  There is nothing in the record to suggest, and Respondent’s WHOIS information does not indicate, that Respondent is commonly known by the <straterhotel.com> domain name.  In addition, Respondent is not authorized or licensed by Complainant to use the STRATER HOTEL mark in any way.  Thus, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).  See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).

 

Furthermore, Respondent’s <straterhotel.com> domain name resolves to a website featuring links to various third-party hotel and travel websites not in direct competition with Complainant.  The Panel presumes that Respondent accrues click-through fees when Internet users click on these links.  This use does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), and further indicates that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).  See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

As mentioned above, Respondent is using the <straterhotel.com> domain name, which is identical to Complainant’s STRATER HOTEL mark, to redirect Internet users to a website containing links to third-party hotel and travel websites not in direct competition with Complainant, and the Panel infers that Respondent is benefiting commercially through this website.  Respondent is thus capitalizing on the likelihood of confusion as to Complainant’s sponsorship or affiliation with the disputed domain name.  Such use is evidence that Respondent registered and is using the <straterhotel.com> domain name in bad faith under Policy ¶ 4(b)(iv).  See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

 

Accordingly, it is Ordered that the <straterhotel.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Louis E. Condon, Panelist

Dated:  August 1, 2007

 

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